Why Preparation Matters Before You File a Trademark

Filing a trademark application with the United States Patent and Trademark Office (USPTO) is an important step toward protecting your brand. However, many business owners rush into filing without understanding what should happen first. Skipping key steps can lead to delays, refusals, or even loss of rights.

A well-prepared application starts long before you hit “submit.” In this article, we’ll walk through seven essential steps you should take before filing your trademark application to set yourself up for success.

1. Understand What a Trademark Protects

Before filing, it’s crucial to know what a trademark actually covers. A trademark protects the source identifier of your goods or services. This is typically a name, logo, slogan, or design that tells consumers where a product or service comes from.

Trademarks don’t protect the product itself, the idea behind it, or the underlying invention. Those fall under patent or copyright protection. Understanding the boundaries of trademark law helps you choose a strong mark that aligns with your business and avoids confusion with other forms of intellectual property.

Knowing exactly what a trademark covers also ensures that you file for the right type of mark, whether it’s a word mark, design mark, or combination mark.

2. Choose a Strong and Distinctive Trademark

Not all trademarks are created equal. The strength of your mark determines how easily it can be registered and how well it will be protected.

Trademarks are grouped into categories of distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. Generic and descriptive terms are often refused by the USPTO because they simply describe the product or service. For example, “Tasty Pizza” for a pizzeria might be too descriptive (sometimes referred to as being "merely descriptive").

The strongest trademarks are fanciful or arbitrary — words like “Kodak” or “Apple” for technology products. These don’t describe the product and are easier to protect.

Before filing, brainstorm creative, distinctive options that will set your brand apart and stand the test of time.

3. Conduct a Comprehensive Trademark Search

This is one of the most important pre-filing steps. A comprehensive trademark search helps you determine whether anyone else is already using a same or similar mark for related goods or services.

Many businesses skip this step and end up facing office actions or oppositions from existing trademark owners. The USPTO will refuse your application if a similar mark already exists for similar goods or services.

A proper search should include:

• The USPTO Database

• State trademark databases.

• Domain names and business name records.

• Social media platforms.

Working with an experienced trademark attorney ensures your search is thorough and interprets the results correctly, which is often more complex than it looks.

4. Identify the Correct Goods and Services

When filing your application, you must describe the goods or services your trademark will cover. The USPTO uses a classification system called International Classes, and each application is organized by class.

Choosing the wrong class or using vague descriptions can result in delays or refusals. For example, “clothing” is Class 25, while “online retail store services” is Class 35. If your description is too broad, your application might face an objection.

It’s best to use clear, accurate language based on the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual). An attorney can help tailor your descriptions to fit your business while meeting USPTO requirements.

5. Determine Trademark Ownership and Filing Basis

Before filing, decide who will own the trademark — an individual, LLC, or corporation. This matters because ownership cannot be easily changed once filed. Listing the wrong owner can cause legal complications later. If you decide to change the entity that owns your trademark in the future, you will have to execute a trademark assignment and record this with the USPTO.

In addition, you'll also need to choose your filing basis:

• Use in commerce (known as a §1(a) basis): You are already using the mark in connection with your goods or services.

• Intent to use (known as a §1(b) basis): You have a bona fide (genuine) intent to use the mark in the future but haven’t yet started.

Both options are valid, but each has its own requirements and timelines. Understanding which applies to you helps prevent unnecessary amendments or refusals later in the process.

6. Prepare the Proper Specimen

A specimen is proof of how you use your trademark in commerce. For goods, this might be a product label or packaging that shows the mark. For services, it could be a website screenshot that displays the mark in connection with your service offerings (and corresponding pricing, in some cases).

The USPTO will reject applications that include mock-ups or promotional materials that don’t reflect actual use. Before filing, make sure your specimen clearly shows your mark as customers would encounter it in the marketplace.

A proper specimen helps establish legitimate use, which is critical for both “use in commerce” filings and for finalizing “intent to use” applications later (once they are approved).

7. Review Your Application for Accuracy

The final step before filing is to review everything carefully. The USPTO charges separate fees for each class of goods and services, and once filed, most details cannot be corrected without refiling.

Double-check the following:

• Trademark spelling and design details

• Owner information

• Goods and services descriptions

• Filing basis and specimen

Even small errors can delay approval or weaken your protection. Taking the time to review ensures that your application is complete, accurate, and ready for examination.

How Kinhal Law Can Help

Filing a trademark application may seem straightforward, but the process involves many technical and legal details that can determine whether your application succeeds or fails.

At Kinhal Law PLLC, we help business owners and entrepreneurs prepare strong applications from the start — ensuring every step, from trademark search to specimen submission, is handled with precision.

Our firm guides clients through the USPTO process, helps identify potential risks before filing, and drafts applications that protect your brand for years to come.

If you’re ready to take the next step toward protecting your brand, book a free consultation today to discuss your trademark filing strategy with an experienced trademark attorney.